Fiat Group Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111 (TTAB 2010) [precedential]

While FIAT is quite a well-known brand in Europe and other regions of the world, cars made by the Italian company aren’t all available in the U.S.… yet (Fiat reportedly has plans to bring more of its small car models to the U.S. market by the end of 2010). In truth, unless they are foreign car aficionados, most American consumers might not have heard of the brand, at least not extensively; at best, some may remember the tiny Fiat 500 fondly from European movies from the 50s and 60s (or the Pixar film “Cars;” Luigi, the tire shop owner was a 1959 Fiat 500). I personally remember (not so fondly!) the Fiat shown below as my very first car but, again, I grew up in a European country.

In the present case, Fiat filed an opposition at the Trademark Trial and Appeal Board (“TTAB”) against an applicant who filed to register the mark PANDA in conjunction with “automobiles,” based on, among other claims, dilution of Fiat’s “internationally famous” identical mark. Fiat owned a pending intent-to-use application at the PTO for the mark (not a registration) and used it internationally in conjunction with its hugely popular Fiat PANDA model, However, the Italian company was not using the mark in the U.S. commerce quite yet.

Applicant filed a motion to dismiss under FRCP 12(b)(6) for failure to state a claim upon which relief can be granted, arguing that Opposer Fiat had “no reasonable basis for damage in the absence of an allegation of ‘continuing prior use of any form of ‘Panda’ in the United States.’”

While the TTAB notes that activity solely outside of the U.S. is generally ineffective to create or maintain rights in marks within the U.S., it recognizes the possibility “in unusual cases” that activity outside of the U.S. could result in a mark becoming well-known within the U.S., even without actual use in commerce in the U.S.

Here, the TTAB found that Fiat failed to allege “any particular type of use or specific facts which could be proved at trial as demonstrating widespread recognition of its mark in the United States.” The TTAB gave Fiat 30 days to amend its dilution claim accordingly.

Practice Note: Pleading the dilution claim properly was key in this case. The TTAB makes clear that a foreign company seeking to oppose a U.S. mark but hasn’t yet started to use its mark in the U.S. market will need more than mere fame outside of the U.S. to be successful. In this case, the TTAB required:
1) specific pleading of intent to use;
2) filing of an application for registration; AND
3) some basis for concluding that recognition of the mark in the U.S. is “sufficiently widespread as to create an association of the mark with particular products or services, even if the source of the same is anonymous and even if the products are not available in the United States.”
Luckily for Fiat, it was given a second chance to meet all three requirements.

The Trademark Trial and Appeal Board has sustained Opposer, shoe maven Kenneth Cole’s contention that LE TIGRE for clothing is confusingly similar to Applicant’s use of LE TIGRE for pens.

Cole failed to establish that its LE TIGRE mark was famous. The Board pointed out that Cole had not provided sales data or advertising information sufficient to show that the mark was famous. Nevertheless, Cole did provide the Board with evidence of its vast licensing program and unsolicited newspaper articles relating to its LE TIGRE brand, as well as an article entitled “Licensing Seen as a Key to Strong Brand Presence.”

The rather rambling decision serves as a reminder that procedure is as important as argument at the TTAB. Not until page 12 of the 23-page report does the Board begin to address the merits of the case, spending the prior pages addressing issues related to the admissibility of evidence and objections raised by both parties.

On the basis of its 23 year use of the mark LE TIGRE for clothing, coupled with its licensing program and the fact that numerous leather companies also have lines of writing instruments, the Board determined the weight of the evidence suggested consumers would likely believe pens and clothing bearing the LE TIGRE mark emanated from the same source.

The case underscores the convergence of industry that companies and their lawyers are facing when trying to clear trademarks for use. Given the diversity that some companies maintain in their product offerings, the ability to predict whether a mark is confusingly similar is becoming more difficult.

Practice Note The lengthy discussion in this case related to procedure is worth noting, if only as a reminder to check (and re-check) what is admissible under a notice of reliance and what requires a deposition; and further, how to properly time objections

Abadin v. Marvel Entertainment Inc. got its final ZOW-POW! from a federal judge in New York who dismissed the action for copyright infringement and Lanham Act violations on a number of technical grounds, including no standing to sue. In a case that works as a “what not to do” checklist for plaintiff’s, it appears it’s safe to walk the streets again for Stan Lee.

Plaintiffs purchased Stan Lee Entertainment in 1999, which Stan Lee (the purported creator of many of the Marvel Comics characters) formed as a management company for his characters. In its lawsuit, Plaintiff claimed Stan Lee had transferred his most famous characters, including Spider-Man, Iron Man, Hulk, and the X-men (the “Characters”) to Stan Lee Entertainment prior to Plaintiff’s purchase of Stan Lee Entertainment. Plaintiff’s claim that Stan Lee Entertainment – and not Stan Lee himself – owned the Characters at the time that Stan Lee entered into an agreement to sell them to Marvel.

Defendant Marvel Entertainment and Stan Lee himself claimed that although Stan Lee had planned to transfer the Characters to Stan Lee Entertainment, the deal fell through, and instead Lee entered into an agreement in 1998 with Marvel – a year before Plaintiff’s purchased Stan Lee Entertainment – wherein Lee, as owner of the Characters, transferred the rights to the characters to Marvel.

In addition to finding that Plaintiffs were barred from their claims by the statute of limitations (“Plaintiffs cannot wait a decade to enforce their rights”), and further finding that procedurally, Plaintiff’s had failed to timely file its amended complaint (the 4th one), the Judge Crotty found that Plaintiffs did not have standing to sue because, a “plaintiff must have owned stock in the corporation throughout the course of the activities that constitute the primary basis of the complaint.” Since Plaintiffs did not purchase Stan Lee Entertainment until a year after the transfer to Marvel was complete, they did not have standing to sue.

Practice Note: Intellectual property due diligence at the outset of this deal might have avoided this suit altogether. Plaintiffs had a duty to carefully conduct the appropriate due diligence to determine what intellectual property was actually owned by the company they were purchasing and further, to request specific representations about what they were buying. In this case, a simple review of the PTO assignment database, freely accessible by the public reveals no fewer than 17 assignments of one SPIDER-MAN trademark, and Mavel’s involvement dating as far back as 1972.

Today the iPad goes on sale. David Pogue and others have given this revolutionary device a big thumbs up. Some have predicted it will galvanize the end of Kindle. The speculation is rampant. This opinion piece in today’s New York Times by Marc Aronson includes an analysis on how the delivery of content is challenged by the historic limitations of copyright:

“We treat copyrights as individual possessions, jewels that exist entirely by themselves. I’m obviously sympathetic to that point of view. But source material also takes on another life when it’s repurposed. It becomes part of the flow, the narration, the interweaving of text and art in books and e-books. It’s essential that we take this into account as we re-imagine permissions in a digital age.

When we have a new model for permissions, we will have new media. Then all of us — authors, readers, new-media innovators, rights holders — will really see the stories that words and images can tell.”

The seminar next week organized and hosted by the Berkeley Center for Law and Technology is an excellent venue to explore this and other copyright topics.

Like Verizon did last year on the same day, Google has announced that it is changing its company name to Topeka. From a trademark law perspective, Google is acutely aware that the public must be educated on proper use of its new mark, so as to lower the risk that TOPEKA might become generic and lose its trademark status as so many marks have before it (such as cellophane, escalator or aspirin). To that end, the Google has posted these helpful trademark usage guidelines:

Further information about the TOPEKA re-branding effort is available here.

The term ‘upgrade’ is thought to ‘improve or step-up the performance or parts of an experience’. Take the experience of flying, as an example. It would trigger outrage to be told that you have qualified for an ‘upgrade’ only to learn that your experience is deteriorated.

How many of us have been invited to ‘upgrade’ our licensed software with an internet service or product provider only to find that it was not an upgrade but instead triggered a reduction or elimination of privileges or access? The number is long of companies who do that. Not just once but repeatedly…. iTunes, Amazon…..to name just two.

TechDirt has a good analysis here of the most recent which Sony is rolling out for the PlayStation 3, including a backstory on EFF’s participation and comment.

“It used to be when you bought a product, you owned it. Simple, right? And once you owned it, you could do what you want with it? But, lately, thanks to digital products and an always connected world, many companies have changed things around — so the products you thought you owned, you actually rent. But, it can go even further than that, where a product you thought you owned can be irrevocably changed without your permission, long after you bought it. Take, for example, the recent story of Sony deleting a feature on the PS3 that let users (not owners, apparently) install other operating systems, such as Linux. It’s going away. Sony announced that when the next PS3 firmware upgrade comes along, it’ll wipe out this feature, whether you used it or not. The only way to avoid that is not to upgrade, but that will also greatly limit what you can do with your PS3.”